Optum, Inc. v. Paul Mellen / Mellen Marketing
Claim Number: FA1712001762046
Complainant is Optum, Inc. (“Complainant”), represented by Kenneth L. Wilton of Seyfarth Shaw LLP, California, USA. Respondent is Paul Mellen / Mellen Marketing (“Respondent”), represented by Sharona H. Sternberg of Sunstein Kann Murphy & Timbers LLP, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2017; the Forum received payment on December 8, 2017.
On Dec 12, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@healthsafeid.com, postmaster@healthsafeid.info, postmaster@healthsafeid.net, and postmaster@healthsafeid.org. Also on December 19, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 8, 2018.
On January 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson as Panelist.
Complainant’s Additional Submission was timely received on January 15 and determined to be compliant with the Rules. Respondent’s Additional Submission was received on January 18, 2018, and it was timely and compliant with the Rules.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading innovator in the health care industry that provides health care benefit products and services, population health management services, and health information, technology, and consulting services in the United States and over 20 other countries through several different corporate entities. Complainant registered the HEALTHSAFE ID mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,242,380, registered Jul. 11, 2017). See Compl. Annex 20. Complainant’s rights date back to March 2, 2016, when it filed its intent-to-use application to register the HEALTHSAFE ID mark. See Compl. Annex 2. Respondent’s domain names are identical to Complainant’s mark as they merely omit the space between the terms of the mark and add a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent offers for sale child fingerprinting and DNA kits that appear to be intended to assist in locating missing children while making no use of the HEALTHSAFE ID mark. See Compl. Annex 19. Further, Respondent, if planning on making some legitimate use of the domain names, probably would not have repeatedly offered to sell the domain names to Complainant when approached. See Compl. Annexes 16-17 (emails between Respondent and Complainant).
Respondent registered and uses the disputed domain names in bad faith as Respondent repeatedly offered to sell the domain names to Complainant for $2,000,000. See Compl. Annexes 16-17. Further, Respondent engaged in a pattern of domain name acquisitions specifically targeting the marks in which it knew Complainant and related entities had already claimed rights. See Compl. Annexes 11, 13 (other domain names owned by Respondent). Additionally, Respondent needlessly maintains a number of separate websites with the exact same (or similar) content—none of which feature the HEALTHSAFE ID mark. Finally, Respondent must have had knowledge of Complainant’s rights in the HEALTHSAFE ID mark when registering the domain names because it registered the domain names within a few days of Complainant filing an intent-to-use application with the USPTO, has direct knowledge of how the trademark application process works, and subsequently registered numerous domain names reflecting Complainant’s other marks.
B. Respondent
Respondent has rights in the HEALTHSAFE mark by virtue of its registration with the USPTO (Reg. No. 5,366,090, registered Dec. 26, 2017). See Resp. Annex 11. Further, Respondent’s use of its HEALTHSAFE marks in connection with its HealthSafe Id Kit products are long prior to Complainant’s rights to the mark HEALTHSAFE ID.
Respondent does have rights and legitimate interests in the <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org> domain names. Respondent has been commonly known by the HEALTHSAFE mark since at least as early as 2012 when it began using the mark in commerce. Specifically, Respondent has consistently used the mark HEALTHSAFE in connection with the offering for sale of a product called the HealthSafe Child Id Kit, which are booklets that include a child’s photo ID, fingerprints, and personal information, as well as flu prevention tips. See Resp. Annex 1, at ¶ 5 (Declaration of Paul S. Mellen). Further, the parties use the marks for vastly different goods and services, and Respondent’s use of its HEALTHSAFE mark for booklets in the field of healthcare that relate to child health and safety protection are not related to Complainant’s use of its mark for identification verification services.
Respondent registered the infringing domain names in good faith. First, Respondent registered the domain name for a legitimate purpose to be used in connection with its HealthSafe ID kits, which it had been consistently offering for sale since 2012. Further, Respondent registered the domain names at issue as well as numerous other domain names when it was contacted by Walmart on March 22, 2016, to cover its basis when Walmart indicated a desire to place Respondent’s product on their shelves. See Resp. Annex 1, at ¶¶ 11-12; Annex 8 (email from Walmart); Annex 10 (domain name WHOIS records). Moreover, Respondent did negotiate to sell the domain names to Complainant, however Complainant was the one who first approached Respondent about purchasing the domain names, and Respondent offered $2,000,000 as a counter because of the four years of investment Respondent had put into its brand. See Resp. Annex 1, at ¶¶ 15, 21, 22, 23, 25. Finally, Respondent was not aware of Complainant at the time it registered the domain names at issue.
Complainant is engaged in reverse domain name hijacking.
C. Additional Submissions
In its Additional Submissions Complainant addresses misstatements by Respondent and clarifying that the facts warrant a transfer of the HEALTHSAFE ID Domain Names to Complainant, since Respondent has never used HEALTHSAFE ID as a trademark, Respondent’s rights in HEALTHSAFE do not alter the analysis regarding the HEALTHSAFE ID Domain Names, and that a finding of bad faith registration is warranted. According to Complainant, even if Respondent did not have actual knowledge of Complainant’s rights at the time of registration, he had constructive knowledge based on Complainant’s trademark application.
Complainant also states that this case does not involve reverse domain name hijacking since it attempted to engage in good faith settlement negotiation to purchase the domains at issue. After it became evident that good faith negotiation with Respondent is impossible, Complainant began the process of investigating and gathered sufficient evidence to support each of the elements of the UDRP Policy prior to bringing its claim.
In its turn Respondent disputes that its rights to HEALTHSAFE entitle it to own and use its HealthSafe ID domains in connection with the sale of ID kits, and that “constructive notice” cannot adequately support a finding of bad faith registration.
Complainant is Optum, Inc. being a subsidiary of UnitedHealth Group Incorporated (“UnitedHealth Group”), a for-profit managed health care company based in Minnetonka (Minnesota, USA), one of the largest healthcare company in the world and leading innovator in the health care industry that provides health care benefit products and services, population health management services, and health information, technology, and consulting services in the United States and over 20 other countries throughout the world.
Complainant developed an authentication tool for online user sign-in that it promotes under the service mark HEALTHSAFE ID (the “HEALTHSAFE ID Mark”) and applied for registration of the HEALTHSAFE ID Mark with the United States Patent and Trademark Office (“USPTO”) for “[i]dentification verification services, namely, providing authentication of personal identification information,” on an intent-to-use basis on March 2, 2016. On July 11, 2017, Complainant received a federal trademark registration for the mark HEALTHSAFE ID.
Complainant began using the HEALTHSAFE ID Mark in commerce on October 1, 2016.
According to the Registrar, the Disputed Domain Names healthsafe.com, healthsafeid.info, healthsafeid.net, and healthsafeid.org were registered on March 22, 2016.
Complainant is seeking the transfer of the Disputed Domain Names.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims to have registered the HEALTHSAFE ID mark with the USPTO (Reg. No. 5,242,380, registered Jul. 11, 2017). See Compl. Annex 20. Upon registration, Complainant’s rights to the mark became retroactive to March 2, 2016, the date the intent-to-use application was filed.
Previous panels held that registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. … Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). See also Esquire Innovations, Inc. v. Iscrub.com, WIPO Case No. D2007-0856 (WIPO May 10, 2007) (“[P]aragraph 4 of the Policy does not require proof of any particular time at which Complainant must have trademark or service mark rights... [The] Policy requires only that Complainant ‘has’ trademark rights, i.e. ‘has’ them at the time the decision is being made.”); See Ideal Prods., LLC v. Manila Indus., Inc., FA819490 (Forum Nov. 26, 2006) (finding complainant met its burden under Paragraph 4(a)(i) of the Policy in case where respondent obtained domain registration after complainant filed intent-to-use trademark application, but before complainant’s trademark registration issued).
It is well established by previous panels that a space as well as adding of a generic top-level domain name (i.e., .com, .info, .net, and .org) are not meaningful enough to differentiate between otherwise identical terms. Starwood Capital Grp. Global LLC v. Domain Asset Holdings, FA1370642 (Forum Mar. 10, 2011) (holding that “the removal of the space between the terms of Complainant’s mark and the addition of the generic top-level domain (‘gTLD’) do not distinguish the disputed domain name from Complainant’s mark”); accord Connections Acad. v. boojoosong, FA1325725 (Forum Jul. 29, 2010) (finding internationalconnectionsacademy.com domain confusingly similar to CONNECTIONS ACADEMY mark, because addition of generic term “international” and gTLD did not create meaningful difference); Hannover Ruckversicherungs-AG v. Ryu, FA102724 (Forum Jan. 7, 2001) (finding hannoverre.com identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the HEALTHSAFE ID Domain Names should be considered identical to the HEALTHSAFE ID Mark for purposes of this analysis.
Accordingly, the Panel finds that Complainant has established rights in the HEALTHSAFE ID mark for the purposes of Policy ¶ 4(a)(i).
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well-established that the burden of proof lies on Complainant. However, satisfying the burden of proving a lack of Respondent's rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
If Respondent demonstrates any of these elements or provides any other evidence that shows it has a right or legitimate interest in the disputed domain name, Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name. Indeed, it is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 2.1, “a complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden production shifts to come forward with appropriate allegation or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In the present case, Complainant has contended that Respondent is not licensed or otherwise authorized by Complainant to use the trademark HEALTHSAFE ID, that no evidence exists to show that Respondent has ever been legitimately known by the HEALTHSAFE ID mark, and has ever made use of HEALTHSAFE ID in connection with a bona fide offering of goods and services. The Panel agree.
Going into details, Complainant contends that Respondent does not use the domain names in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use, as Respondent offers for sale child fingerprinting and DNA kits that appear to be intended to assist in locating missing children while making no use of the HEALTHSAFE ID mark. Previous panels held that reflecting a complainant’s mark in a domain name and offering competing or unrelated products or services can evince a lack of rights and legitimate interests in a domain name per Policy ¶¶ 4(c)(i) and (iii). See Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”).
Complainant provides a screenshot of the resolving webpages for the domain names at issue, all of which resolve to a domain with a photo of three children and the message “Exceptional HealthSafe Kits and ChildSafety Kits For Your Family.” See Compl. Annex 19. All other evidences provided by Respondent demonstrate that, in fact, it has not used HEALTHSAFE ID as a trademark, whereas his purported rights in the HEALTHSAFE mark are not relevant to the analysis regarding the HEALTHSAFE ID Domain Names, as well as do not justify its registration of domains that include Complainant’s HEALTHSAFE ID mark.
As such, the Panel agrees with Complainant’s assertions and may hold that Respondent does not use the domain names in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Finally, having contended that Respondent is not commonly known by the disputed domains, Panel finds relevant information according to WHOIS and any other assertions by a Complainant regarding the nature of its relationship with a respondent to be sufficient under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that Respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that Respondent was commonly known by the domain names, and Complainant had not authorized Respondent to register a domain name containing its registered mark). The WHOIS identifies “Paul Mellen / Mellen Marketing” as the registrant of the domain names. See Compl. Annex 4. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the HEALTHSAFE ID mark. Panel uses these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org> domain names under Policy ¶ 4(c)(ii).
Accordingly, the Panel finds that Complainant has succeeded to satisfy the second element of the Policy under Paragraph 4(a)(ii).
Although the Panel finds the previous elements to be confirmed, the Panel may not agree that Respondent registered and used the disputed domains in bad faith according to the Policy ¶ 4(a)(iii).
Indeed, Respondent did negotiate to sell the domain names to Complainant, however Complainant was the one who first approached Respondent about purchasing the domain names, and Respondent offered $2,000,000 as a counter because of the four years of investment Respondent had put into its brand. See Resp. Annex 1, at ¶¶ 15, 21, 22, 23, 25. Offering to sell a domain name to a complainant does not automatically indicate bad faith registration and use by a respondent under Policy ¶ 4(b)(i), including when a complainant initiates an offer to purchase a domain name. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [Respondent] to offer to sell for a market price, rather than out-of-pocket expenses”); see also JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that Respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because Respondent did not register the domain name with the intent to sell it to Complainant or one of its competitors). Therefore, the Panel does not agree that Respondent registered the domain names with the intent to sell them to Complainant at a later date, and thus the Panel holds that Respondent did not register the domain names in bad faith under the circumstances according to the Policy ¶ 4(b)(i).
Respondent claims it registered the domain names in good faith, as it registered them for a legitimate purpose to be used in connection with its HealthSafe ID kits, which it had been consistently offering for sale since 2012. Registering and using a domain name for a legitimate purpose and without attempting to disrupt a complainant’s business or divert its users can counter arguments of bad faith (Policy ¶ 4(b)(iii)). See Election Systems & Software, Inc. v. Stewart, FA 805224 (Forum Nov. 14, 2006) (Where Respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that Respondent did not register and use the <racegirl.com> domain name in bad faith because Complainant provided no evidence that Respondent intended to disrupt or divert business from Complainant). Respondent provides screenshots of the resolving webpages for the domain names, and all resolve to a domain displaying the title “HEALTHSAFE CHILD ID PRODUCTS” and appear to offer related goods. See Resp. Annex 2.
Furthermore, the Panel has not seen clear evidence provided by Complainant of the registration and use of the disputed Domain Names in bad faith by Respondent in confirmation of circumstances envisaged by Policy ¶ 4(b)(ii), (iv).
Respondent also claims that it was not aware of Complainant at the time it registered the <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org> domain names. A respondent without knowledge of a complainant’s rights in a mark at the time of registering a confusingly similar domain name can be found to not have registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that Respondent’s constructive notice of Complainant’s registered mark was insufficient to support a finding of bad faith registration); see also Builder’s Best Inc. v. Okada, D2004-0748 (WIPO Nov. 17, 2004) (“…[T]o warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that Respondent knew the domain name was identical or similar to Complainant’s mark, not just ‘someone’s’ mark.”). Respondent’s representative, Paul S. Mellen, claims in a declaration that it only because aware of Complainant’s potential rights in the HEALTHSAFE ID mark when Complainant’s contacted Respondent regarding the domain names seven (7) years after Respondent registered the domain names. See Resp. Annex 1, at ¶ 16.
There is simply no reason to doubt Respondent’s credibility, nor is the Panel in a position to do so. See KGP Telecommunications, Inc. v. KGP International Ltd., FA1607001685573 (Forum Sept. 7, 2016) ( UDRP Panels are “not in a position to second-guess Respondent’s assertions as to its knowledge and its intentions, because ‘the Policy and the Rules do not provide the Panel with any authority to ascertain Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.’”) (citing Google Inc. v. Blue Arctic LLC, Forum 1447355).
In the above circumstances, Panel may not agree with Complainant that Respondent had actual knowledge of Complainant’s rights in the HEALTHSAFE ID mark at the time it registered the Domain Names.
Furthermore, according to Complainant, even if Respondent did not have actual knowledge of Complainant’s rights at the time of registration, he had constructive knowledge based on Complainant’s trademark application (See Complainant’s Reply, page 5).
In the meantime, as known, the concept of “constructive notice” has been raised in argument by complainants in previous cases under the Policy. It raises a number of controversial issues, namely: (i) is there a concept of constructive notice under the Policy and (ii) if the concept exists, in what circumstances does it apply? Some panels in some cases have indicated that the concept of constructive notice may be taken into account when considering the issue of bad faith, but only in very limited circumstances. The Panel here refers to the decisions in Red Nacional de los Ferrocarriles Espanoles v Ox90, WIPO Case No. D2001-0981 (in respect of <renfe.com>), and Sibyl Avery Jackson v. Jan Teluch, WIPO Case No.D2002-1180 (in respect of <sibylaveryjackson.com>). What Red Nacional shows is that the application of the principle of constructive notice, even in the limited circumstances of that case, is controversial. Indeed, the presiding panelist in that case gave a dissenting opinion in which he rejected the concept of constructive notice in UDRP proceedings, stating: "If a concept of constructive knowledge (i.e. “he must have guessed and had he made the simplest of searches he would have known; he ought to have made the search, therefore he is to be taken as having known”) is introduced into the UDRP, there is no knowing where this will all lead."
Complainant’s assertion that Respondent was under an obligation to conduct a search prior to registering the Domain Name is simply a restatement of the constructive notice argument in a different form and is similarly rejected by the Panel.
In any case, according to previous panels, constructive notice cannot adequately support a finding of bad faith registration. See Rive, LLC v. Bill R., FA1305001501995 (Forum July 10, 2013) (“constructive notice does not adequately support a finding of bad faith registration pursuant to Policy ¶ 4(a)(iii).”); Boston Private Financial Holdings, Inc. v. Eric Kuniholm / Beacon Capital Management Advisors, FA1503001611880 (Forum May 21, 2015) (“To the extent that Complainant’s argument is that Respondent acted in bad faith, due to the strict liability trademark concept of constructive notice, it has no place in a UDRP proceeding.”); The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) (“Mere constructive knowledge is insufficient to support a finding of bad faith.”); Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010); The Way Int'l, Inc. v. Diamond Peters, D2003- 0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.4.
Even in the rare instances where constructive notice has been found by Panels to serve as evidence of bad faith, this is only where: (a) there was already a federal registration at the time the domains were acquired – here, there was only an intent-to-use application on file, and the registration did not issue until well over a year later on July 11, 2017; and (b) unlike here, the panels were instead presented with egregious and undisputable evidence demonstrating that the domain holder should have known of complainant’s rights, such as where Respondent was a professional domain holder or had a pattern of bad faith conduct, or where the mark was very famous. See, e.g., The Fragrance Foundation Inc. v. Tex. Int’l Property Assocs, WIPO Case No. D2008-0982 (WIPO Aug. 28, 2008) (cited by Complainant) (acknowledging that “as a general rule, UDRP panels are reluctant to find that a respondent had constructive notice of an existing trademark when registering a domain name,” but finding constructive notice where the registration was publicly registered for decades and respondent had a pattern of bad faith conduct and had been ruled against in over a hundred UDRP cases in less than two years); The Nasdaq Stock Market, Inc. v. Pouran, WIPO Case No. D2002-0770 (Oct. 16, 2002) (cited by Complainant) (respondent “knew or should have known of Complainant” only because complainant’s trademark was very famous and was widely publicized globally and constantly featured throughout the internet).
For the reasons set out above, the Panel concludes that Complainant has presented no sufficient evidence to suggest that Respondent has registered and used the Domain Names in bad faith. As a result, the third element of the Policy under Paragraph 4(a)(iii) has not been satisfied.
Reverse Domain Name Hijacking (“RDNH”)
Paragraph 15(e) of the Rules provides that, if after considering the submissions, the Panel finds that the Complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. RDNH is defined under the Rules as using the UDRP in a bad faith to attempt to deprive a registered domain name holder of a domain name.
Here, the Panel makes a finding of no RDNH on the part of Complainant since earlier the Panel found that Complainant had satisfied Policy ¶ 4(a)(i)(ii). See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy). Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on Complainant’s part, which was not proven because Complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <healthsafeid.com>, <healthsafeid.info>, <healthsafeid.net>, and <healthsafeid.org> domain names REMAIN WITH Respondent.
Antonina Pakharenko-Anderson, Panelist
Dated: January 25, 2018
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